Bella Belle LLC v. Brigitte Braun / Whoisprotection.cc / Domain Admin / Anne WEBER
Claim Number: FA2107001954879
Complainant is Bella Belle LLC (“Complainant”), represented by Veronyca Kwan, Texas, USA. Respondent is Brigitte Braun / Whoisprotection.cc / Domain Admin / Anne WEBER (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bbshoesforsale.com>, <bellabelleshoessale.com>, and <bellabelleshoesaustralia.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED, NameSilo, LLC, and NETIM SARL.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 13, 2021; the Forum received payment on July 13, 2021.
On July 13, 15, and 20, 2021, respectively, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED, NameSilo, LLC, and NETIM SARL confirmed by e-mail to the Forum that the <bbshoesforsale.com> <bellabelleshoessale.com> and <bellabelleshoesaustralia.com> domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED, NameSilo, LLC, and NETIM SARL and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED, NameSilo, LLC, and NETIM SARL have verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED, NameSilo, LLC, and NETIM SARL registration agreements and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 28, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 17, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bbshoesforsale.com, postmaster@bellabelleshoessale.com, and postmaster@bellabelleshoesaustralia.com. Also on July 28, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 23, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist (the "Panel").
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
The disputed domain names are not owned by one party. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant alleges that the domain names are effectively controlled by a single person or entity, operating under several aliases. The approach taken to this issue by the majority of UDRP panelists is to allow a single administrative proceeding in respect of several domain names not commonly held if there is reasonable evidence of a claim to actual control by one person or entity.
That common control is said to be shown by the facts that the resolving websites are almost identical in format and content. On the evidence the Panel accepts that is so. The Panel also notes that the domain names were registered within a short time span of each other, albeit with different Registrars.
On balance, the Panel considers that this is adequate evidence of Complainant’s assertion of a single controlling entity and so allows these proceedings to continue against the named respondents, referring to them together as “Respondent”.
A. Complainant
Complainant asserts trademark rights in BELLA BELLE and submits that the domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant sells footwear by reference to the trademark, BELLA BELLE, registered with the United States Patent and Trademark Office (“USPTO”) as Reg. No. 5,170,266, registered March 28, 2017;
2. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or register any domain name incorporating that trademark;
3. Respondent registered the disputed domain names on the following dates: <bbshoesforsale.com> on April 22, 2021; <bellabelleshoessale.com> on March 22, 2021; and <bellabelleshoesaustralia.com> on March 5, 2021; and
4. the domain names resolve to essentially identical websites advertising footwear by reference to Complainant’s trademark.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
As stated, Respondent contacted the Forum offering to transfer the domain name after it got the Complaint. The Panel is in these circumstances permitted to order immediate transfer of the domain name but has taken the view, for reasons which follow, that Respondent acted in bad faith and considers that a decision on the record is in the general interest. Accordingly, the Panel goes on to apply the Policy which under paragraph 4(a) requires that Complainant must prove each of the following three elements to obtain an order that the domain name be transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding based on Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory[i].
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[ii]. Complainant provides evidence of its USPTO registration for BELLA BELLE. The registered mark shows a very small degree of stylisation which does not influence this analysis.
As indicated above, Complainant asserts that the domain names are all confusingly similar to its mark. Two of the domain names, <bellabelleshoessale.com> and <bellabelleshoesaustralia.com>, take the trademark to which they add descriptive elements in the form of the expressions, “shoes sale” or “shoes Australia”, together with the gTLD, “.com”. None of those additions carries any distinctive value and the trademark remains the recognizable part of the disputed domain names. It follows that the Panel finds those disputed domain names to be confusingly similar to the trademark for the purposes of paragraph 4(a)(i) of the Policy[iii].
On the other hand, the Panel does not accept that <bbshoesforsale.com> is confusingly similar to the trademark. Notwithstanding inclusion of the marker word, “shoes”, the letters “bb” of themselves are not enough to connote the trademark in the absence of better evidence, for example, a registration for those letters, or proof of public use of those letters by Complainant such that they would be seen as a common law mark.
Accordingly, Complainant has satisfied the first element of the Policy in respect of the domain names, <bellabelleshoessale.com> and <bellabelleshoesaustralia.com>, in respect of which the further considerations (below) relate but has failed to satisfy the Policy in relation to <bbshoesforsale.com> with the result that the Complaint fails with respect to it.[iv]
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[v].
The publicly available WhoIs information shielded the name of the underlying domain name registrants by a privacy service provider but in consequence of these proceedings the Registrar disclosed the names of the actual holders. Neither of those names provide any prima facie evidence that Respondent might be known by the disputed domain name. There is nothing else to suggest that Respondent is commonly known by the domain names and there is no evidence it has trademark rights of its own.
Complainant provides screenshots of the resolving webpages which show ladies footwear for sale by reference to Complainant’s registered trademark (that is, including the stylization of that mark referred to earlier). Clearly, the resolving websites are intended to create the impression that the shoes on sale are those of Complainant and are being put on the market by Complainant.
The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names since the use is not a bona fide offering of goods or services or legitimate noncommercial or fair use under the Policy[vi].
The onus shifts to Respondent to establish a legitimate interest and, absent a Response, that prima facie case is not rebutted. The Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied this second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered and used in bad faith.
Guidance is found in paragraph 4(b) of the Policy which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Panel finds that paragraph 4(b)(iv) has direct application. The Panel has already found the disputed domain names to be confusingly similar to the trademark. In terms of the Policy, the Panel finds that Respondent has intentionally used the domain names to attract, for commercial gain, Internet users to the resolving websites by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of those websites.
The Panel finds registration and use in bad faith and so finds that Complainant has satisfied the third and final element of the Policy[vii].
Having established all three elements required under the ICANN Policy in respect of the domain names, <bellabelleshoessale.com> and <bellabelleshoesaustralia.com>, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that those domain names be TRANSFERRED from Respondent to Complainant.
Having failed to establish one of the three elements required under the ICANN Policy in respect of the domain name, <bbshoesforsale.com>, the Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that this domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Date: August 25, 2021
[i] See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true; Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”)
[ii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[iii] See, for example, Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Forum Jan. 11, 2001) finding <nationalgeographics.com> confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark.
[iv] See, for example, Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary; Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i).
[v] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[vi] See, for example, Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”).
[vii] See, for example, G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”
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